Ex Parte Fong et alDownload PDFPatent Trial and Appeal BoardAug 29, 201613572068 (P.T.A.B. Aug. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/572,068 08/10/2012 Liana L. FONG 48243 7590 08/31/2016 FLEIT GIBBONS GUTMAN BONGINI & BIANCO PL 551NW77TH STREET, SUITE 111 BOCA RATON, FL 33487 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. YOR920090344US2 5106 EXAMINER GOLDBERG, IV AN R ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/31/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ptoboca@fggbb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LIANA L. FONG, DAVID C. FRANK, LINH H. LAM, and ZHILE ZOU Appeal2014-007767 Application 13/572,068 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-5 and 7-10. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A computer implemented method for managing workflow instance migration, the computer implemented method comprising: 1 Appellants identify International Business Machines Corporation (IBM) of Armonk, NY as the real party in interest. Appeal Br. 2. Appeal2014-007767 Application 13/572,068 receiving, with a migration manager communicatively coupled to a memory and a processor of an information processing system, a migration plan indicating a set of workflow migration points associated with an initial workflow process model that are migrateable to a new workflow process model, wherein the set of workflow migration points are associated with a set of workflow activities of the initial workflow model; selecting, with the migration manager, at least one workflow instance from a set of workflow instances, wherein each workflow instance in the set of workflow instances is an instantiation of the initial workflow process model and is operating at least one workflow activity in the initial workflow process model; determining, with the migration manager, based at least on the set of workflow migration points and the associated set of workflow activities being annotated in the migration plan as filterable or not-filterable and on a current state of one or more migration process filters, a current migrateability state associated with the workflow instance that has been selected; granting, with the migration manager, in response to determining that the current migrateability state is set to migrateable, migration of the workflow instance to the new workflow process model; and preventing, with the migration manager, in response to determining that the current migrateability state fails to be set to migrateable, migration of the workflow instance to the new workflow process model for at least a given amount of time. 2 Appeal2014-007767 Application 13/572,068 THE REJECTION2 The Examiner relies upon the following as evidence of unpatentability: Hohmann US2008/0196027 Al Aug. 14, 2008 Melody Yang and Mildred Wang, "Oracle® iSetup, User Guide, Release 12, Part No. B31430-02," August 2007, pgs. 1-109. "WebSphere MQ Worliflow to WebSphere Process Server Transition, Example of a custom process instance migration," Version 3, June 2009, International Business Machines Corporation 2009, pgs. 1-27. The following rejections are before us for review. Claims 1--4 and 7-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hohmann in view of Oracle iSetup. 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the most recent Patent Office guidance on § 101 found in the May 4, 2016 Memorandum to the Examining Corps, titled "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection," and the "July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg. 45429 (July 30, 2015), which supplements the "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014 ), and the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014. 3 Appeal2014-007767 Application 13/572,068 Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hohmann in view of Oracle iSetup and in further view of IBM, Websphere MQ Workflow to WebSphere Process Server Transition.i-f ANALYSIS Each of independent claims 1 and 8 recites, in one form or another, determining, with the migration manager, based at least on the set of worliflow migration points and the associated set of worliflow activities being annotated in the migration plan as filterable or not-filterable and on a current state of one or more migration process filters, a current migrateability state associated with the worliflow instance that has been selected; The Examiner found that: Hohmann does not explicitly teach wherein determining a current migrateability state associated \~1ith the \~1orkflo\~1 is based on the associated set of worliflow activities being annotated in the migration plan as filterable or not-filterable and on a current state of one or more migration process filters. However, a public use of Oracle iSetup, as evidenced by User's Guide, in the analogous art of online data migration and reporting tools, teaches these concepts (User's Guide, pg. 38, Selection Set Details, showing under Migrations Tab, certain data objects set to being filterable; pg. 39, Viewing Filters, enabling user to view filter information; pg. 41-42, Set the Filter Criteria, filters can be set on some attributes of data objects, wherein data objects that are filterable appear on the page, and all data objects do not support filters (i.e., some are filterable and some unfilterable ); pg. 92-102, tables listing current state filterablility of various data object attributes). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Hohmann to include the 4 Appeal2014-007767 Application 13/572,068 teaching of a public use of Oracle iSetup, providing the benefit of more efficient data migrations by moving only the data that is desired to be moved and filtering out the unwanted or unnecessary. (Final Act. 6-7). Appellants, however, argue that: The claimed method determines a current migratability state associated with the selected workflow instance based at least on the set of workflow activities being annotated in the migration plan as filterable or not-filterable and on a current state of one or more migration process filters. This claimed method is different than the teachings in the Oracle iSetup that guide a user to create a selection set for extracting data objects from a source database to a target database, and optionally setting a filter to filter whether data objects are extracted based on the current value of certain attributes of the data object, while certain data objects are merely inherently unfilterable. In the Oracle iSetup there is nowhere taught or suggested that a "set of workflow activities being annotated in the migration plan as filterable or not- filterable and on a current state of one or more migration process filters." Hohmann is also silent regarding this presently claimed feature. (Appeal Br. 9). We agree with Appellants. The claim requires determining, with the migration manager, based at least on the set of worliflow migration points and the associated set of worliflow activities being annotated in the migration plan as filterable or not-filterable and on a current state of one or more migration process filters, a current migrateability state associated with the worliflow instance that has been selected. The Examiner found that in Hohmann the "partial template wavefronts define migration points." (Final Act. 5). The Examiner also 5 Appeal2014-007767 Application 13/572,068 found that "in the Oracle iSetup reference, the steps/activities of the model being created include lookups, responsibilities, status processing rules, etc., [] all read on being 'workflow activities' that are a part of a 'sequence of activities."' (Answer 5). The Examiner found that the Specification describes workflow activities as "discrete steps of the working model" (Answer 5, citing Specification i-f24), and then goes on to find that Oracle iSetup discloses "activities" in "the steps/activities of the model being created include lookups, responsibilities, status processing rules, etc." Id. But, the Examiner also found that because Oracle iSetup discloses "certain data objects set to be filterable" (Final Act. 6), the claim requirement of associated set of worliflow activities being annotated in the migration plan as filterable or not-filterable, is met. We, thus, agree with the Appellants that the Examiner's rejection is improper because we cannot equate the claim term "activity" - discrete steps of a working model, with a data object. We find that the definition of "data object" is a data structure in an object oriented programming. 3 We, thus, find that a format for organizing data is not a discrete step/activity in a working model as required by the claims, and thus the Oracle iSetup reference cannot meet the claim requirement. Accordingly we will not sustain the rejection of independent claims 1 and 8. Because claims 2-5, 7, 9, and 10 depend from one of claims 1 and 8 and because we cannot sustain the rejection of claims 1 and 8, the rejection of claims 2-5, 7, 9, and 10 likewise cannot be sustained. 3 http://www.merriam-webster.com/dictionary/object (last visited 8/14/2016). 6 Appeal2014-007767 Application 13/572,068 CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 1-5 and 7-10 under 35 U.S.C. § 103. DECISION The decision of the Examiner to reject claims 1-5 and 7-10 is reversed. REVERSED. 7 Copy with citationCopy as parenthetical citation